CAFC Affirms TTAB: MAGNESITA is Generic for …. Guess What?

In a nonprecedential ruling, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB’s decision (here) upholding a refusal to register the term MAGNESITA for refractory bricks and related products, on the ground of genericness, and for providing information via a global computer network regarding refractory products, on the ground of mere descriptiveness. In re Magnesita Refractories Company, Appeal No. 2016-2345 (Fed. Cir. November 27, 2017) [not precedential].

Genericness: The Board applied the doctrine of foreign equivalents, translating MAGNESITA as “magnesia” from the Italian and “magnesite” from the Spanish and Portuguese. Applicant did not challenge the applicability of the doctrine of equivalents. Nor did it challenge the Board’s determination of the genus of the goods (refractory bricks and refractory patching and lining mixes) or the relevant public (ordinary consumers who purchase such refractory products). Instead, applicant contended that the only conclusion that could be drawn from the evidence was that magnesite and magnesia can be used in refractory products.

The record evidence, however, included numerous uses of magnesite and magnesia as key components in refractory products, and that was sufficient to establish genericness. See In re Cordua Rests., Inc., 823 F.3d 594, 603-04 (Fed. Cir. 2006) (holding that certain words referring to key aspects of a genus of services were generic for the services.)

Acquired Descriptiveness: Applicant challenged the Board’s finding that applicant did not establish acquired distinctiveness for MAGNESITA for its Internet informational services. Applicant claimed the five years of use is by statute evidence of to show that MAGNESITA has acquired distinctiveness. The Board pointed out, however, that Section 2(f) of the Lanham Act says that the Director may accept as prima facie evidence of acquired distinctiveness, proof of substantially exclusive and continuous use of a mark for five years. The Board is not required to find acquired distinctiveness based on five years of use. “The Board has discretion to require more evidence, particularly for highly descriptive marks.” In re Louisiana Fish Fry Prods., Ltd., 797 F.3d 1332, 1337 (Fed. Cir. 2015).

Here, the Board correctly found MAGNESITA to be highly descriptive of the services. Therefore, applicant had an elevated burden to show acquired distinctiveness by more than sales data and five years of use. The Board was within its discretion to require additional evidence, as it faulted applicant for not submitting any direct evidence showing how the public perceives MAGNESITA as a source identifier.

Conclusion: Substantial evidence supported the Board’s findings that MAGNESITA is generic for refractory products and is highly descriptive for related information services.